Ex Parte Rice

Board of Patent Appeals and Interferences

Mar 13, 2003

08003996 (B.P.A.I. Mar. 13, 2003)

1 Application for patent filed January 15, 1993, entitled
"Spread Spectrum Transceiver," which is a division of Application
07/766,372, filed September 27, 1991, now U.S. Patent 5,210,770,
issued May 11, 1993.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte BART F. RICE

Appeal No. 2002-1554
Application 08/003,9961

HEARD: February 13, 2003

Before BARRETT, FLEMING, and TORCZON, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 2-51. Claim 1 has been canceled.
We reverse.
Appeal No. 2002-1554
Application 08/003,996
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PREVIOUS APPEAL
A previous decision was entered in this case in Ex parte
Rice, No. 95-3029 (Bd. Pat. App. & Int. March 24, 1999) (Paper
No. 20), affirming the rejection of claims 2-51 under 35 U.S.C.
§ 101. Independent claims 2, 16, 34 were subsequently amended
to change "signals" to "electromagnetic signals" (Paper No. 22).
BACKGROUND
The disclosed invention is directed to an "electromagnetic
signal" and an "electromagnetic signal" produced by a certain
process (product-by-process).
Representative claims 2 and 16 are reproduced below with the
added limitation to "electromagnetic" underlined.
2. An assembly of simultaneously transmitted
electromagnetic signals, said signals being related to each
other in said assembly so as to communicate information to a
receiver, said signals being structured so as to contain
corresponding subsets of a set of binary spreading-code
sequences, at least one subset of said set of binary
spreading-code sequences containing more than one of said
binary spreading-code sequences, each subset of said set of
binary spreading-code sequences embodying a corresponding
portion of said information.
16. An assembly of simultaneously transmitted
electromagnetic signals, said signals being related to each
other in said assembly so as to communicate information from
a transmitting node to a receiving node of a communication
network, said assembly of signals being produced by a
process of:
a) assigning blocks of bits embodying said
information to corresponding subsets of a set of
binary spreading-code sequences, at least one of
said subsets of said set of binary spreading-code
Appeal No. 2002-1554
Application 08/003,996
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sequences containing more than one of said binary
spreading-code sequences; and
b) simultaneously transmitting selected subsets of
said set of binary spreading-code sequences from
said transmitting node to said receiving node.
No prior art is relied on in the rejection.
Claims 2-51 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
We refer to the examiner's answer (Paper No. 32) (pages
referred to as "EA__") for a statement of the examiner's position
and to the appeal brief (Paper No. 13) for a statement of
appellant's position.
OPINION
The examiner concludes that the claimed "electromagnetic
signals" are nonstatutory subject matter because such signals are
"transitory and ephemeral." For example, the examiner states
that "[s]ignals are neither a manufacture nor a composition of
matter as appellant alleges but a transitory emanation of a
previously patented apparatus and method" (EA3). The examiner
further states (EA4):
This attempt to patent signals in free space is akin to
patenting an audio or television program or any other signal
in free space after transmission but before reception.
There is no reason why these transitory and ephemeral
emanations should be included in the four statutory classes
of invention.
Appeal No. 2002-1554
Application 08/003,996
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The examiner still further states (EA4):
Any signal in free space is transitory, ephemeral and not
useful without transmission or reception. It is a short
lived intermediate having no utility in and of itself
without the process and apparatus of transmission or
reception. The examiner respectfully suggests that they are
the later [sic, latter] and hence not statutory.
The examiner made exactly the same arguments in the previous
appeal. However, contrary to the examiner's statement that
"[T]he Board of Appeals has previously agreed with the Examiner
in the affirmance dated 3/24/99" (EA4), while our previous
decision affirmed the examiner's rejection under § 101, it should
be clear from reading it that it did not rely on the analysis
that signals are not within the four statutory categories of
patentable subject matter because they are "transitory and
ephemeral." The examiner has made no attempt to incorporate our
reasoning into his statement of the rejection. Accordingly, this
decision is limited to consideration of the examiner's reasons.
Appellant refers to a paper by Stephen G. Kunin, Deputy
Assistant Commission for Patent Policy & Projects, Computer
Program Product Claims, presented at a "Partners in Patents V
Conference" sometime between October 22, 1996, and May 18, 2000,
(after the date of our previous decision), which indicates that
the transitory nature of a signal does not make it nonstatutory
subject matter, referring by example to U.S. Patent 3,156,523 to
element 95 and citing In re Breslow, 616 F.2d 516, 205 USPQ 221
Appeal No. 2002-1554
Application 08/003,996
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(CCPA 1980) (reversing the Board's conclusion that compounds were
not patentable subject matter because they were "transitory and
ephemeral in nature," i.e., not stable). The examiner does not
address this reasoning. We agree that signals do not become
unpatentable subject matter just because of their "transitory and
ephemeral nature." There is no reason why the time of existence
should affect a subject matter's status under the four statutory
categories of "process, machine, manufacture, or composition of
matter," or the three exceptions for "laws of nature, natural
phenomena, and abstract ideas." Furthermore, Mr. Kunin's
reasoning has now been incorporated into the Manual of Patent
Examining Procedure § 2106 (8th ed. Aug. 2001), page 2100-14:
"[A] signal claim directed to a practical application of
electromagnetic energy is statutory regardless of its transitory
nature. See O'Reilly, 56 U.S. at 114-19; In re Breslow,
616 F.2d 516, 519-21, 205 USPQ 221, 225-26 (CCPA 1980)."
Appeal No. 2002-1554
Application 08/003,996
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The examiner's reasoning that the claimed electromagnetic
signals are nonstatutory subject matter because signals are
"transitory and ephemeral in nature" is not persuasive. We
decline to expand the analysis beyond the scope of the reasons
given by the examiner. The rejection of claims 2-51 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 2002-1554
Application 08/003,996
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